Distillations: Respect Thy Neighbor (on the Shelf)

Although it has refused to acknowledge a default rule, the Trademark Trial and Appeal Board (TTAB) continues its recent trend of concluding that beer, wine, liquor, and other alcohol-based consumables are related for purposes of the likelihood of confusion analysis. In its non-precedential ruling on May 10, In re Cruz, Ser. No. 86845373 (TTAB 2017), the Board revisited this question when it was tasked with determining the likelihood of confusion between the applied for mark PA'DENTRO for tequila and tequila-based beverages and the registered mark ADENTRO for wine. The Board considered a number of factors in assessing the relatedness of the goods.

First the Board considered the evidence supplied by the Examining Attorney to support the refusal, which consisted of eleven (11) third party registrations covering both tequila and wine, and a print-out from an e-commerce direct-to-consumer website which sold both tequila and wine. The Board then considered case law on the question, and went on to cite several cases decided by both the TTAB and the Court of Appeals for the Federal Circuit, including:

• In re AGE Bodegas Unidas, S.A., 192 USPQ 326 (TTAB 1976), finding wines and whiskey related.
• Monarch Wine Co. v. Hood River Distillers, Inc., 196 USPQ 855 (TTAB 1977), finding wine and liquor related.
• Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069 (TTAB 1989), finding malt liquor and Cognac brandy to be related, despite having "no doubt that purchasers are not likely to consume a malt liquor thinking that it is Cognac brandy." at 2073.
• In re Majestic Distilling Company, Inc., 315 F.3d 1311 (Fed. Cir. 2003), finding malt liquor and tequila related.
• In re Chatam Int'l Inc., 380 F.3d 1340 (Fed. Cir. 2004), finding tequila and beer related.

Considering the case law and the (relatively paltry) evidence submitted by the Examining Attorney, the TTAB reaffirmed its unofficial position that alcohol-based products are typically related, stating: "we find that the evidence of record, as well as legal precedent, sufficiently demonstrates that the goods identified in Applicant's application and the goods identified in the cited registration are related." Cruz at *10.

On the question of the relatedness of the trade channels and purchasers of tequila and wine, the Board followed suit, and found that "the respective goods, as identified, would be provided in the same or at least overlapping channels of trade to the same or overlapping classes of purchasers." Id. at *11.

Although the Applicant attempted to salvage its position by arguing that customers are sophisticated when purchasing alcohol, the TTAB was unconvinced. Ultimately, the Board concluded that PA'DENTRO for tequila was likely to cause confusion with ADENTRO for wine because the marks were similar, the goods related, the trade channels and customers identical or overlapping, and the degree of care in making purchasing decisions included "impulse" purchasing.

Although the Board seemed persuaded by relatively weak evidence, it still refrained from introducing a default rule that alcohol-based products are inherently similar. Indeed, the federal register reflects the possibility that similar marks used in connection with different alcohol products can coexist and is replete with examples. Similarly, there is even case law to support the premise that these products should not be considered inherently related. See, e.g., In re Reubens Brews LLC, Opp. No. 86066711 (TTAB 2015) (non-precedential) (finding REUBEN'S BREWS [& design] for beer not likely to cause confusion with RUBENS [stylized] for wine).

Though not a default rule, the Cruz case, and the numerous others like it such as those cited above, should be considered when assessing the availability of a new mark or in sending/responding to a cease and desist letter. This case also serves as a reminder of the importance of doing a clearance search before introducing a new beer, wine, or liquor line, and certainly before investing in label design, advertising, etc..

This question regularly appears before the TTAB, and we will continue to monitor these decisions for new developments. Indeed, the Board may already have another opportunity to declare (or disclaim) a default rule on its docket. Certainly, Port Brewing, LLC hopes for another ruling in the all-alcohol-is-related line of cases, given that it filed an opposition against Ronald Scott Heron's application for CARNIVALE for wine based on its registration for CARNEVALE for beer. See Opposition No. 91234488, filed May 10, 2017.

Authors: John P. McCormick, Robert M. O’Connell, Jr.